It is now the month of Ramadhan, and what follows the end of this holy fasting month is the Muslim celebration of Eid al-Fitr. In shopping malls around the country, festive decorations and music help set the mood while retail outlets proudly display their wares to those who pass by. The retail outlets employ transparent roller shutters that allow the merchandise to be displayed even when the outlet is closed. These transparent roller shutters were the subject matter of a patent infringement suit between two manufacturers and retailers of roller shutters recently.

SKB Shutters Manufacturing Sdn Bhd (“SKB”), the owner of Malaysian Patent No. MY- 128431-A (“SKB patent”) initiated patent infringement proceedings against its competitor, Seng Kong Shutter Industries Sdn Bhd (“Seng Kong”).

At the trial in the High Court, Seng Kong denied patent infringement and counterclaimed that the SKB patent was invalid on the ground that the claimed features were not novel nor inventive. Seng Kong adduced evidence that there was prior art (a PVC aluminium roller shutter and two published US Patents Nos. 5,456,305 and 4,433,714) before the application date of the SKB patent. The High Court judge compared the PVC aluminium shutter against SKB’s own product that was claimed to be made according to the SKB patent and decided that the patent was valid. However, on appeal to the Court of Appeal, it was held that the High Court had used the wrong test. To determine novelty,  it is the patent claims (of the SKB patent), not SKB’s product (allegedly made according to the SKB patent) that should be compared against the prior art. On conducting this test, the Court of Appeal held that the patent claims were not novel and therefore the SKB patent was held invalid.

As the patent was held invalid, there was no reason for the Court to determine whether Seng Kong’s shutters infringed any of the claims of the SKB patent. This would merely be of academic interest.

Practice Note: In drafting patent claims it is important that effort is made in identifying close prior art and thereafter to draft claims that do not claim features of prior art. In the present case, when challenged with a patent infringement suit, Seng Kong spared no effort in identifying close prior art and used the evidence to challenge the validity of the granted patent.

As the SKB patent has been declared invalid, it would not be surprising to note that other manufacturers of roller shutters would now confidently start to manufacture roller shutters following the teachings of the SKB patent. Should SKB and Seng Kong, after analysing the evidence before them, have entered into a confidential settlement agreement, knowing the strengths and weaknesses of their respective case?

We will leave that as food for thought, as we take this opportunity to wish all Muslim readers a “Selamat Berbuka Puasa” and “Selamat Hari Raya”!